The IP Law Blog

FEBRUARY 15, 2024

On February 12, 2024, the United States Patent and Trademark Office (“USPTO”) issued guidance on the patentability of inventions developed with the assistance of artificial intelligence, saying that a human must have made a “significant contribution” to the invention.

Invention 109

Invention Inventor Patent Patent Application 109

JD Supra Law

JANUARY 11, 2024

This past Friday, a federal district court held that the mere fact of combining certain natural products – such as isolated, naturally occurring AAV sequences and a heterologous non-AAV sequence – and putting them into a cultured host cell, without some change, does not give rise to a patent eligible invention under 35 U.S.C. §

Invention 119

Invention Patent 119

SpicyIP

AUGUST 29, 2024

Recently the MHC remanded a matter back to the Controller for re-consideration on whether the cited prior art would render the invention obvious in light of the explanation in the specification. Interestingly, the impugned order by the Controller has already held the invention to be obvious based on the claims filed by the applicant.

Invention 114

Invention Patent Application Art Patent 114

IP Law 360

FEBRUARY 12, 2024

Patent and Trademark Office on Monday issued guidance on how it will determine whether inventions developed with the assistance of artificial intelligence can be patented, explaining that a human must have made a "significant contribution."

Invention 111

Invention Patent Trademark 111

Patently-O

AUGUST 5, 2024

Kaijet highlights the narrowness of the pre-filing grace period (safe harbor) provision under the America Invents Act (AIA) and serves as a reminder that there are a number of patents that would have been valid under the pre-AIA patent system may no longer be valid under the current law. HyperDrive apparently embodies the claimed invention.

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Invention Inventor Art Public Use 111

The IPKat

SEPTEMBER 10, 2023

The minutes are brief but confirm the Board of Appeal's decision to acknowledge the inventive step of the claimed invention and to dismiss the appeal. The inventive step of the claimed invention was acknowledged based on the post-published data submitted by the Patentee. How many moths needed for an invention?

Invention 120

Invention Publishing Law Patent Application 120

IP Watchdog

APRIL 25, 2023

While many speakers cautioned against moving too quickly to change the rules for AI-generated inventions, others warned that doing nothing could result in chaos for the USPTO and grave economic and innovation losses for the country.

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Invention Trademark Patent Inventor 131

Barry Sookman

DECEMBER 23, 2023

Recent decisions in both the patent and copyright fields have denied protection for otherwise patentable inventions and copyright works where the sole claimed inventor or author is identified as an artificial intelligence system. … The post Do generative AI inventions and works qualify for patents and copyrights?

Invention 114

Invention Copyright Patent Inventor 114

JD Supra Law

AUGUST 20, 2024

ITC, the Federal Circuit addressed whether the America Invents Act (“AIA”) changed the on-sale bar such that the sale of a product made using a secret process would no longer invalidate later-sought claims on that process. In Celanese Int’l Corp. By: A&O Shearman

Invention 115

Invention Patent 115

JD Supra Law

AUGUST 15, 2024

While the manufacturer always kept the exact formula a secret, the Federal Circuit still said the sale of the end product (Ace-K sweetener) to Coca-Cola meant that the invention was being sold “publicly”. By: Farella Braun + Martel LLP

Invention 99

Invention Patent 99

IP Law 360

JUNE 20, 2024

Patent and Trademark Office's guidance on when inventions developed using artificial intelligence can be patented generated criticism from the American Bar Association's Section of Intellectual Property Law, expressing concern that it could be detrimental as it "casts doubt on inventorship through general acts of human direction."

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Invention Intellectual Property Law Intellectual Property IP 97

JD Supra Law

APRIL 30, 2024

In the 1950’s, Alan Turing famously asked, “Can machines think?” Decades later, artificial intelligence—a term coined after Turing’s death—has become a facet of our everyday lives. Artificial Intelligence (AI) can be used to improve efficiency, predict outcomes with a high degree of accuracy, and even create new data and solutions.

Invention 120

Invention Patent Law Law Government 120

Intellectual Property Law Blog

JUNE 5, 2023

Background In 2015, Ironburg Inventions Ltd. . § 315(e)(2); and (2) the “skilled and diligent searcher” inquiry itself with respect to what a skilled and diligent searcher reasonably would have been expected to discover. Ironburg”) sued Valve Corporation (“Valve”) for infringing U.S. 8,641,525 (“the ’525 patent”).

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Invention Art Litigation Patent 130

Intellectual Property Law Blog

MAY 22, 2023

Enablement Section 112(a) of the Patent Act requires that a patent specification includes “a written description of the invention, and of the manner and process of making an using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art…to make and use the same.

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Invention Art Inventor Patent 246

IP Watchdog

OCTOBER 1, 2023

PERA is no doubt an ambitious bill. In terms of its design, the proposed legislation attempts to deal with each of the Supreme Court’s decisions in Alice, Mayo and Myriad, plus all of their progeny applications thereafter engendered by the Federal Circuit, the Patent Trial and Appeal Board (PTAB), all the way down to the U.S.

Invention 137

Invention Patent Designs Design 137

JD Supra Law

DECEMBER 4, 2024

The Patent Trial and Appeal Board determined that a reference could be used as prior art because patent owner failed to provide sufficient evidence that the prior art’s disclosure was invented by all four named inventors, and thus the same “inventive entity,” as the challenged claims. By: Akin Gump Strauss Hauer & Feld LLP

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Invention Inventor Patent Art 66

JD Supra Law

NOVEMBER 21, 2024

of the Chinese Patent Law prescribes that: inventiveness means that, as compared with the prior art, the invention has prominent substantive features and represents a notable progress. Article 22.3 By: Linda Liu & Partners

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Invention Art Patent Law Law 72

JD Supra Law

DECEMBER 5, 2024

However, obtaining patent protection for AI/ML-based inventions in life sciences can be difficult, particularly due to the challenges posed by US Patent & Trademark Office (USPTO) rejections under 35 U.S.C. § 101, which governs patentable subject matter.

Invention 72

Invention Intellectual Property Trademark Patent 72

JD Supra Law

DECEMBER 20, 2024

From Santa detectors to upside-down Christmas trees, Scott Hervey and Jamie Lincenberg explore festive inventions that add a little extra cheer to the season on this episode of The Briefing. Get into the holiday spirit with a look at some of the most unique Christmas patents ever filed. By: Weintraub Tobin

Invention 60

Invention Patent 60

SpicyIP

NOVEMBER 9, 2024

In his recent work published in the Journal of Intellectual Property Law and Practice , Dr. Mo Abolkheir argues that the prevailing interpretation of ‘inventive steps’ places emphasis on the inventor’s imaginative capacity rather than the invention itself. It confuses ‘invention’ with ‘person.’ Cipla Ltd. ,

Patent Law 105

Patent Law Law Invention Patent 105

Intellectual Property Law Blog

OCTOBER 6, 2023

. § 135, and specifically whether the Patent Trial and Appeal Board (Board) has the authority to cancel SNIPR’s pure AIA claims through an interference for lack of invention priority under pre-AIA § 102(g). patent system from a first-to-invent system to a first-to-file system.

Invention 162

Invention Patent Application Inventor Government 162

JD Supra Law

DECEMBER 20, 2024

From Santa detectors to upside-down Christmas trees, Scott Hervey and Jamie Lincenberg explore festive inventions that add a little extra cheer to the season on this episode of The Briefing. Get into the holiday spirit with a look at some of the most unique Christmas patents ever filed. By: Weintraub Tobin

Invention 60

Invention Patent 60

Intellectual Property Law Blog

NOVEMBER 1, 2023

The EO requires the USPTO Director to: within 120 days of the date of this order, publish guidance to USPTO patent examiners and applicants addressing inventorship and the use of AI , including generative AI, in the inventive process, including illustrative examples in which AI systems play different roles in inventive processes and how, in each example, (..)

IP 262

IP Intellectual Property Copyright Invention 262

JD Supra Law

OCTOBER 25, 2023

In 2025, the National Aeronautics and Space Administration (NASA) is scheduled to once again bring man and machine to the lunar surface, this time under the name of the Greek goddess Artemis. However, the means to the ends have changed.

Invention 119

Invention Patent 119

The IPKat

JANUARY 17, 2023

The Board of Appeals approach leads them to accept both the novelty and inventive step of a subrange that is very close to that of the prior art, and which has an overlapping technical effect with that of the prior art. The claims were therefore found both novel and inventive.

Invention 140

Invention Art Law Patent Law 140

Intellectual Property Law Blog

NOVEMBER 8, 2023

During the IPR, neither party had asserted that these errors were material to the claimed invention. The Federal Circuit found there was no indication that the patentee meant to claim its invention more narrowly that what the specification describes.

Invention 264

Invention Art Patent 264

The IPKat

JULY 15, 2024

Since G 2/21 , Boards of Appeal have united on the interpretation that the evidence standard for inventive step (the "plausibility/credibility test") remains unchanged. In this case, the selexipag polymorph patent was opposed on the grounds of lack of inventive step.

Invention 114

Invention Patent Publishing Patent Application 114

The IPKat

MARCH 7, 2023

by Giorgia Golzio and Daniele Golzio You might have come across The Simpsons’ episode “ Girls Just Want to Have Sums ”, in which Homer challenges the ability of women to invent. As Marge recalls, Bette Nesmith Graham (1929-1984) invented the first correction fluid in her kitchen in 1951: the so-called Liquid Paper.

Invention 143

Invention Patent Inventor Designs 143

Intellectual Property Law Blog

SEPTEMBER 8, 2021

See “Inventing AI, Tracing the diffusion of artificial intelligence with U.S. These decisions inform strategies to optimize patent drafting and prosecution for artificial intelligence and machine learning related inventions. patents,” Office of the Chief Economist, IP Data Highlights (October 2020). Part One can be viewed here.

Patent 189

Patent Patent Application Invention Art 189

Intellectual Property Law Blog

FEBRUARY 13, 2024

Teleflex claimed that Itou was not prior art because the invention claimed in the ’116 patent was conceived before Itou’s critical date and was either actually reduced to practice before the critical date or diligently pursued until its constructive reduction to practice.

Invention 130

Invention Art Inventor Patent 130

Intellectual Property Law Blog

DECEMBER 15, 2023

Patents 8,048,032, RE45,380, RE45,776, RE45,760, and RE47,379 (collectively, “the challenged patents”) under pre-AIA’s first-to-invent provisions. VSI”), asserted that the claimed invention of the challenged patents was conceived in early 2005. Patent 7,736,355 (“the ’355 patent”) does not qualify as prior art to related U.S.

Art 147

Art Inventor Invention Patent 147

Intellectual Property Law Blog

FEBRUARY 28, 2024

200, passed in 1980, streamlined and relaxed federal government policy regarding patent rights to inventions developed with federal grant money. The funding agency obtains a license to “subject inventions,” which is defined as “any invention. . . The invention of the patent at issue in the case ( U.S. 35 U.S.C. §

Licensing 130

Licensing Invention Inventor Government 130

Intellectual Property Law Blog

OCTOBER 11, 2022

MPEP Sections to Know – Especially for AI Inventions. A couple key areas of concern for applications that are directed to AI inventions are (1) patent subject matter eligibility and (2) an enabling disclosure. The USPTO has published various examiner training materials for examining AI inventions.

Patent Application 186

Patent Application Patent Inventor Invention 186

SpicyIP

AUGUST 13, 2024

The DHC, in this judgement, continued with its restrictive interpretation of 3(k), narrowing the scope of inventions which are excluded u/s. The invention, which related to a system of data profiling, would use a profiling module to read records from data sources, compute statistics, and other descriptive information relating to the data set.

Invention 110

Invention Patent Public Domain Technology 110

IP Watchdog

MAY 15, 2023

For more than 40 years, they’ve been resisting the Bayh-Dole Act’s mandate cutting Washington out of micro-managing the commercialization of federally funded inventions. As a result, few inventions were ever developed. And under the guise of increasing domestic manufacturing, they’re well on their way to reasserting control.

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Invention Ownership Licensing Government 130

IP Watchdog

MAY 13, 2024

Vance’s (R-OH) “Invent It Here, Make It Here” bill. Despite the name and its good intentions, it condemns promising federally funded inventions to waste away without doing a thing to build our domestic manufacturing base. Exhibit A could be Senator Tammy Baldwin (D-WI) and Senator J.D.

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Licensing Invention Inventor Business 129

Patently-O

FEBRUARY 12, 2024

Patent and Trademark Office (USPTO) recently published examination guidance and a request for comments on the treatment of inventorship for inventions created with the assistance of artificial intelligence (AI) systems. Inventorship Guidance for AI-Assisted Inventions. Rather, the human must provide significant inventive contribution).

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Inventor Invention Patent Application Designs 120